Volvo loses dispute against dealer who uses their registered trademark in his domain name

A while ago, we already posted an article about the decision of the World Intellectual Property Organisation (WIPO) in which they approved that dealers could use a registered trademark in their domain name, as long as they meet some conditions. Volvo also experienced this.

Volvo filed a case under the dispute resolution panel of WIPO against the owner of a spare parts seller. This spare parts seller used the domain name www.volvospares.com and Volvo didn’t agree on this. So Volvo had to proof that Volvospares violated this 3 rules:

  1. The domain name is confusingly similar to the registered trade mark
  2. The domain name holder has no right or legitimate interest in the domain names
  3. The domain name has been registered in bad faith

According to Volvo this was the case for Volvospares. ‘The name is confusing, Volvospares has a legitimate interest in the domain name and the name has been registered in bad faith,’ said Volvo.

The panel said that although the domain was confusingly similar to Volvo’s trademarks it was not registered and used in bad faith.

You do not always have to be a trade mark holder or have the holder’s permission in order to own a domain name related to a mark

A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements

These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner.

Volvo argued that Volvospares had not fulfilled the 3 requirements outlined in WIPO’s rules. To test the first suspicion, namely that the goods were actually offered and sold, Volvo’s said that they have made three secret test purchases from Volvospares. In all three cases the goods ordered were not delivered, they said. The WIPO panel did not accept that this meant that Volvospares broke its rules.

‘While the failure to supply the parts might raise suspicions, it is very difficult in a proceeding such as the present to go further than that,’ said the panellist for WIPO, Warwick Rothnie. ‘In these circumstances, the Panel is unable to accept Volvo’s invitation to find that Volvospares is not in fact offering Volvo’s goods for sale in good faith.’

Volvo claimed that the second condition – that Volvospares sell just Volvo trade marked goods – was not satisfied because it sold parts bearing other people’s names and trade marks.

But Volvospares pointed out that it was a site for selling spare parts for Volvos, and even Volvo cars had many parts made by other people. WIPO agreed with Volvospares.

Thirdly, Volvo said that the site did not make it clear that it was not affiliated to Volvo. The site now carries a disclaimer but there was a dispute about whether that was added before or after the complaint was made.

The WIPO panellist said that a disclaimer was not essential.

‘If you look at each specific page of the website, you can’t find any misrepresetation of an association with Volvo,’  said Rothnie. ‘ This site doesn’t show anything else than what appears to be true namely that it offers for sale from the website parts for Volvo vehicles.’

‘On balance, the website does not have an appearance which suggests it is likely to be mistaken for an official or authorized site of the Volvo group. In the circumstances, the Panel finds that it is most unlikely that anyone would have been misled by the website even before the disclaimer was added,” he said.

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This post was written by lieve on February 26, 2009

bNamed reduces the price for .ac

bNamed has reduced the price for .ac (Ascension Island, a small island near the African West Coast) with approximately 25%. This reduction was possible because of the volume of .ac names and the favorable rate of the pound.

With a domain name ending on .ac, you can show everybody in a playful way that they can always reach you. .ac may be the abbreviation of always connected!

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This post was written by lieve on February 24, 2009

Domain name market keeps growing despite crisis

Business GraphIn 2008 the global amount of domain names rose with 16%. At the end of December 2008, there were 177 million domain names registered worldwide. Despite the crises, the domain name market continues to grow. However it is a slower growth then in 2007. In 2007, the total amount of domain names rose with 27% compared to 2006.

The crisis hit the hardest during the fourth quarter of 2008. During this quarter 10,1 million new names were registered. However, over the entire year there was an average of 11,9 million new registrations per quarter. These numbers show quite clearly that there obviously were more new registrations during the first three quarters of 2008 than during the last one.

Of all already existing names 85% were renewed during 2008. If we take a close look to some specific extensions, we notice that only 73% of already existing .com and .net names were renewed during 2008. So the renewals of ccTLD’s definitely increase the global average.

There were also more names registered under a country extension (like .be, .nl, .it,…)  than under a generic extension (like .com, .net, .org,…)  in 2008. One explanation can be that there are still more interesting domain names left to register under a country extension than under a generic extension. Moreover lots of people tend to search for a domain name under their own country extension. So as a company, you’ll have more chances to be found, when you’re domain name ends on the extension of the country where you’re active than when you use a generic .com or .net name.

bNamed offers registrations for every possible extension.

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This post was written by lieve on February 20, 2009

200,000 .me names registered

Approximately 10 months ago, the .me domain name was relaunched. And that defenitely wasn’t a bad decision. Right now there are already 200,000 .me name registrations. This makes .ME the fastest growing new ccTLD launch on record!

With 200,000 registrations coming from 181 different countries, including the US, the UK, France, India, Israel, Germany,… it is clear that the appeal for .me is a truly global. Moreover the domain has become quite popular for both personal and professional uses.

‘Having hit 200,000 registered domains in barely ten months signals to us that .me is seen as a valuable extension,’ says Predrag Lesic, the executive director of the .me registry. ‘The best part is there are still so many great names available, in every language,’ adds Predrag.

The conditions for registering a .me name also become less strict. It is now possible to register a .me name for one year while it used to be a 2 year commitment.

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This post was written by lieve on February 18, 2009

Register your .com.mx name now and…

be the first to register your domain name under the .mx domain. Because of the re-opening of the .mx domain, it is now the ideal moment to register your name under the .com.mx domain. If you do so, you can register your .mx domain already during the pre-registration period.

To be able to register your name during the pre-registration period, your .com.mx name needs to be registered and paid before March 1st 2009. So you better don’t wait too long. You also need to take into account that during the pre-registration period, priority will be given to the domain name with the oldest creation date.

To support the re-opening of the .mx domain, bNamed now gives a great reduction on .com.mx names.

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This post was written by lieve on February 12, 2009

Release .mx

logoPretty soon, it will be possible to register domain names under the .mx domain. There were already several extensions available for Mexico (.com.mx, .org.mx, .edu.mx,…) but now the toplevel domain .mx is re-opened. The .mx domain was already available from February 1989 until March 1997 but it was ment for schools and university. The other institutions and organisations had to use the other extensions (.com.mx, .org.mx,…). In September 1996 the new domain .edu.mx was released. In March 1997 .edu.mx became the official extension for schools and universities and the .mx domain disappeared.

That’s going to change! The .mx domain is re-opened and this time for all audiences. The domain will be released in three phases.

1) The pre-registration period: This period starts May 1st 2009 and ends July 31st 2009

During this period the owners of a domain name under an Mexican extension (.com.mx, Org.mx, .net.mx,…) can register their name under the .mx extension. The domain name you wish to register needs to be exactly the same as your current domain name. If their are 2 applications for the same name (for instance someone has a name registered under the .com.mx domain and someone else has the same name registered under the .org.mx domain), priority will be given to the domain name with the oldest creation date. So if the .org.mx name is registered in 2006 and the .com.mx name is registered in 2005, the owner of the .com.mx name will receive the .mx name.

2) The quiet period: This period starts August 1st 2009 and ends August 31st 2009

During this period, no more applications will be accepted. The applications done during the pre-registration period which still have a pending status will be further processed.

3) The initial registration period: This period starts September 1st 2009 and ends October 31st 2009

During this period, everyone who wishes, can register a name under the .mx domain. During this period the first come, first served principle is applied.

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This post was written by lieve on February 12, 2009

Sunrise period .co.nl has started

We are now in the sunrise period for the .co.nl domain. This period has started February 10th and ends March 10th. During this period, the owners of a registered trademark can register their name under this extension. There are however some conditions to which you need to meet and you need to be willing to submit the following information:

  1. The domain name you want to register needs to be exactly the same as the trademark you registered
  2. You must tell your registration number
  3. You need to let them know which registration locality you used
  4. If your not the trademark holder of the name you want to register, you will have to apply as assignee and indicate the link between you and the trademark holder

Domain names that are registered during the sunrise period will automatically be renewed for free for the first ten years if they link towards an active website. If you only register a domain name to protect your trademark and the name doesn’t link towards an active website, you’ll need to pay an annual fee to renew your domain name.

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This post was written by lieve on February 11, 2009

No crisis for domain names

The domain name registrations don’t seem to suffer from the financial crisis. Especially .cn, .de and .at names are doing great. In January 2009, there were over 14 million registered .cn names. The Chinese extension is doing an excellent job. Also the German extension is doing very well, with over 12,5 million registered  .de names.

In January 2009, there were also over a 800.000 registered .at names. This ain’t bad at all for a country with a small population. The Austrian extension is also one of the easiest extensions to register because there are no special conditions or restrictions.

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This post was written by lieve on February 11, 2009

Sunrise period .co.nl extended

Even before the sunrise periode for the .co.nl domain has started, it is already been extended from 16 days to 1 month. The sunrise starts on Tuesday February 10th and ends Tuesday March 10th.

During the sunrise, the owners of a registered trademark can register their name under the .co.nl domain.  During this period application are considered on a first come, first served basis.

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This post was written by lieve on February 4, 2009

DNS.be withdraws 163 domain names

DNS.be, the central .be registry, has withdrawn 163 .be domain names. This domain names were all related to phishingwebsites or involved in a so called ‘fast flux network’.

In a fast flux network, the name servers to which a domain name is linked, change constantly. In this way the cybercriminal hopes to keep his site up and running for a longer time. Phishing is a fraudulent practice by which the cybercriminal redirects the user to an imitation of a website (usually a bank’s), and where confidential information is requested.

Because of the the large number of .be domain names involved, DNS.be thought this could indicate a professionally organized attack which could harm the total of the .be domain name zone. Therefore they informed the Federal Computer Crime Unit (FCCU). “They are the competent authority regarding the withdrawing of a domain name,” says Hans Seeuws, spokesperson of DNS.be. “Without their permission, DNS.be can’t withdraw a .be domain name.”

The FCCU immediately examined the request of DNS.be and a list with the involved domain names was handed over to DNS.be to be cancelled. DNS.be immediately withdraw those 163 domain names

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This post was written by lieve on February 3, 2009